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IN THE HIGH COURT OF DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
LV Degao - Appellant
Versus
HTC Corporation - Respondent
FAO(OS) (COMM) 169 of 2022 & CM Appl. 29966 of 2022
Decided On : 04-08-2022
| Table of Content |
|---|
| 1. overview of parties and trademarks involved (Para 1 , 2 , 3 , 4 , 5) |
| 2. background of trademark registrations and disputes (Para 6 , 7 , 8 , 9) |
| 3. interim injunction granted based on prima facie merits (Para 10 , 11 , 12) |
| 4. appellants' arguments against non-bona fide use findings (Para 15 , 16 , 17 , 18 , 19) |
| 5. court's observation on potential consumer confusion (Para 20 , 21 , 22 , 24) |
| 6. evaluation of the appellants' trademark adoption rationale (Para 25 , 26 , 27 , 28 , 29 , 30 , 31) |
| 7. final dismissal of appeal with costs (Para 32 , 33 , 34) |
JUDGMENT
Vibhu Bakhru, J. The appellants have filed the present intra court appeal under Section 13 of the Commercial Courts Act, 2015, impugning the order dated 06.04.2022 (hereafter `the impugned order') passed by the learned Single Judge in IA No. 5795/2020 in CS(COMM) 263/2020. By the impugned order the court allowed the respondent's application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 and restrained the appellants from manufacturing, selling, supplying, offering for sale, including through online platforms, exporting, importing, directly or indirectly dealing, using the Trade Marks registered in favour of the respondent 
and/or any othertrade mark/device/logo which may be identical with or deceptively similar tothe respondent's trade mark/trade name.
2. The appellants are inter alia engaged in manufacturing of electric hair trimmers, hair clippers and hair dryers in China and exporting/supplying the same to India.
3. HTC Corporation (hereafter `the respondent') is a company incorporated under the laws of Taiwan and engaged in the business of manufacturing consumer electronic items such as smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head-mounted displays, etc. The respondent states that it was incorporated in 1997 as "High Tech Computer Corporation". The respondent claims that it changed its name to the acronym "HTC Corporation" in the year 2008 due to the growing popularity of their "HTC" brand.
4. The respondent claims that it is the registered owner of the trademark, 
in over 90 countries. It also claims that it has applied for and has been granted registration of various trade marks in India. The tabular statement setting out the details of the marks owned by the respondent, as set out in the plaint, is reproduced below:
| "Trade Mark Registration No. and Date | Trade Mark | Class | Description of Goods | Renewal Status |
| 1645578 24/1/2008 |  | 9 | Mobile Phones; video phones; smart phones; personal digital assistants; voice over internet protocol phones; camera phones; tablet computers; slim computers; ultra mobile personal computers; accessories for the above goods, namely, headset, headsets with wireless transmission function, synchronization cable, cradle, battery, AC adaptor, chargers, etc. | Renewed and valid till 24/1/2028 |
| 1451016 12/5/2006 |  | 9 | Mobile phones, video phones, smart phones, personal digital assistants (PDA); voice over internet protocol (VOIP) phones; camera phones; tablet computers; slim computer; ultra mobile personal computers (UMPC); accessories for the above goods, headset, bluetooth headset, synchronization cable, cradle, battery, AC adaptor, etc. | Renewed and valid till 12/5/2026 |
| 2239238 24/11/2011 |  | 9 | Mobile phones, smartphones, wireless phones, wireless devices, portable computers and personal digital assistants, computer hardware and software for mobile, portable and wireless devices; user interface software; computer hardware and software for user interfacing, telecommunications and telecommunications services; wireless modems; headsets, connection cables, cradles, mounts, power adaptors, chargers, remote controls, keyboards, microphones etc. | Renewed and valid till 24/11/2021 |
5. The respondent claims to the registered owner of the following formative Trade Marks in India:
| "Sl. No. | Trade Mark Registration No. and Date | Trade Mark | Class | Status |
| 1. | 2215248 04/10/2011 | HTC LISTEN | 9, 35 & 38 | Registered and valid |
 | ||||
Court upheld that unauthorized use of a well-known trade mark constitutes infringement, as it can mislead consumers about product sources, affirming the importance of protecting brand reputation.
The plaintiff can establish passing off and infringement under the Trade Marks Act even without direct market presence, provided it demonstrates sufficient reputation and links to its brand.
Section 24(4)(c) does not expect the registered trade mark of the plaintiff to have become a well-known Trade Mark within the meaning of Section 2(1)(z)(g)”.
Descriptive terms in trade, such as 'Sanjha Chulha', cannot be exclusively owned despite trademark registration; common usage undermines claims of infringement.
The decision emphasizes the importance of prior use and consumer confusion in trademark disputes, reinforcing the need for evidence in claims of trademark registration.
The court held that the concealment of material facts by the respondents did not warrant the dismissal of the suit or the vacation of the interim injunction, as the equities lay in favor of the respo....
A plaintiff can maintain a passing off action irrespective of trade mark registration status, highlighting the need for genuine evidence in trade mark disputes.
The main legal point established is that at the interlocutory stage, the plaintiff's claim for trademark infringement must be proven, and the balance of convenience is a crucial factor in granting in....
The court emphasized that misleading statements in seeking ex-parte injunctions undermine judicial integrity, warranting vacating such orders.
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